Checklist for Protecting and Enforcing your Intellectual Property Rights in the U.S. and Abroad Dorian Mazurkevich Attorney-Advisor Office of Enforcement

Checklist for Protecting and Enforcing your Intellectual

Property Rights in the U.S. and Abroad

Dorian MazurkevichAttorney-Advisor

Office of EnforcementU.S. Patent and Trademark Office

Conference on Intellectual Property in the Global Marketplace

Protecting and Enforcing Your Intellectual Property Rights

• How to protect your intellectual property rights?

– Strategic and Operational Measures

• Tips to prevent the theft of your intellectual property before it happens.

• How to enforce your intellectual property rights?

– Legal Measures

• Available options if your intellectual property is stolen.

Protecting Your Intellectual Property Rights

• What exactly am I protecting?

• What do I do to protect the intellectual property that I have identified?

• What am I protecting?– Determine what intellectual property your business

has by conducting an “Internal IP Audit” to identify:

• Copyrights• Trademarks• Patents• Trade Secrets

Protecting your Intellectual Property

• Conducting an Internal IP Audit

– Trademarks:

• Registered Marks• Business Names• Logos• Slogans• Domain Names• Product Packaging/Configuration• Website Design



– Copyrights:

• Registered Copyrights• Written Materials • Photographs• Illustrations• Computer Software• Music/Film• Website Content



– Patents:

• Issued Patents• Pending Applications• Mechanical Devices• Electronic Devices• Medicine/Medical Devices• Chemical Composition/Process• Computer-Based Business Process (Software)



– Trade Secret:

“… means information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and

(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”


• Trade Secret Factors:

1. Known outside of your business?

2. Known by those inside your business?

3. Measures to guard secrecy?

4. Value of the information?

5. Effort/cost in developing?

6. Easy to duplicate?


• Trade Secret Factors:

– Maintaining Secrecy

• Limit Distribution• Mark “Confidential”• Secure Facilities and Files• Enact Policies and Procedures• Contracts with Employees and 3rd Parties


• Conducting an Internal IP Audit– Trade Secrets:

• Customer Lists• Pricing/Cost Data• Customer Information and Sales Practices• Business Plans• Financial Data/Forecasts• Manufacturing Techniques• Design Manuals• Production Processes/Specifications• Survey/Research Data (including negative R&D)


• What am I protecting?

– Identify the IP in your business:

• Copyrights• Trademarks• Patents• Trade Secrets

– Can be a mixture of IP for single product.


• Prioritize your IP:

– Cost vs. Benefit

– Offensive vs. Defensive Value

• Implement measures to protect the IP that you have identified:

– Internal (inside your business)

– External (dealing with 3rd parties)


• Internal Measures to Safeguard your IP

– Register IP

– Pay maintenance and renewal fees

– Confirm you own the IP

– Take steps to secure your confidential information


• Trade Secret Protection

– Company Policies:

• Restrict physical access, lock premises, file cabinets, etc.

• Mark all confidential and trade secret documents “CONFIDENTIAL.”

• Limit access and distribution of confidential documents to necessary employees.

• Shred and retrieve any distributed documents (failed mergers, departing employees).

• Use computer encryption, password protection, firewalls, network security, esp. with laptop users.


• Trade Secret Protection

– Employee Policies:

• Non-Disclosure Agreement

• Non-Compete Agreement

• IP Assignment

• Employee Manual - policy and procedures on treatment of confidential information:

regarding publications/speeches to prevent disclosure (i.e. trade secret review)

regarding submission of ideas, new patents (i.e. inventors notebook)

• Exit Interview


• External Measures to Safeguard IP

– Important with any business transaction with 3rd parties involving IP:

• Acquisition • Merger• Licensing• Joint-Venture• Sale



– Conduct Due Diligence of 3rd Party:

• Assess the 3rd Party• Identify the IP• Review Underlying Documents (e.g.

assignments, licenses, registrations, applications)• Verify Ownership/Proper Chain of Title• Lawsuits/Threatened Claims



– Conduct IP Review of Transaction:

• Confidentiality /Non-Disclosure Agreement• Exclusivity• Territoriality • Field of use• Quality control• Inspections/Audits• Indemnification Clause



– Police your IP:

• Review market• Monitor competitor’s filings• Risk assessment• Monitor internal controls

– Enforce your IP: Take legal action when necessary.



How to enforce your IP?

– Legal Options:

• Civil• Criminal• Administrative

Enforcing Your Intellectual Property Rights

• Legal Measures to Enforce your IP:

– Civil System

• State and Federal• Alternative Dispute Resolution (ADR)

– Criminal System

• U.S. Department of Justice

– Administrative System

• U.S. Customs (Border Enforcement) • U.S. Patent & Trademark Office


Enforcing IP Through the Civil Court System:

– Determine Whether Your IP Has Been Taken or Copied

• Infringement Determination

– Send Cease and Desist Letter

– Negotiate or Enter into Licensing Agreement

– File Claim

• State or Federal Court• ADR


• Patent Infringement:

1. Claim Construction By Judge: Determines the meaning and scope of the claims in the patent.

2. Infringement Analysis By Jury: Comparison of the properly construed claims to the accused device.


• Patent Infringement Defenses:

• No Infringement• Patent Invalidity• Laches• Inequitable Conduct• Patent Misuse• Experimental Use


• Trademark Infringement

– Is there a “likelihood of confusion” from the perspective of the reasonable prudent purchaser?

• Strength of the plaintiff’s trademark• Similarity between the trademarks

• Proximity of the products in the marketplace• Likelihood that the prior owner will bridge the gap• Evidence of actual confusion

• Defendant’s good faith in adopting the mark• Quality of the defendant’s product

• Care and sophistication of the buyers


• Trademark Infringement Defenses:

• No Infringement• Abandonment• Laches• Fraudulent Registration• Acquiescence• Nominative Use (Comparative Advertising)• Parody


• Copyright Infringement– Proof of Access to the Work

– “Substantial Similarity”

• Vicarious Copyright Infringement– Copyright infringement by someone else

– Ability to control and financial benefit

• Contributory Copyright Infringement– Copyright infringement by someone else

– Knowledge and substantial participation


• Copyright Infringement Defenses

– Non-infringement/Independent creation

– Inequitable conduct

– Laches

– Fair use:

1. Type of use (commercial, nonprofit, or educational)2. Nature of work (factual or creative)3. Amount taken4. Market effect


• Misappropriation of Trade Secret

– Acquisition of a trade secret of another by “improper means,” such as:

• Theft• Bribery• Misrepresentation• breach of duty to maintain secrecy• Inducement of a breach of duty to maintain secrecy• Espionage through electronic or other means


• Misappropriation of Trade Secret Defenses:

– Not a Trade Secret:

• Secrecy Not Maintained• Information Publicly Available

– Reverse Engineering


Infringement / Misappropriation Remedies:

– Injunction

– Damages

• “Reasonable Royalty”• Lost profits• For patents, if willful infringement: 3x damages assessed and/or attorneys’ fees• For copyrights, can elect to get statutory damages

– Pre/Post-Judgment Interest


If You Determine Your IP Has Been Infringed?

– Cease and Desist Letter

• Provides notice that infringement has occurred• In patent case, other party may file a Declaratory Judgment Action

– Negotiate / Enter into Licensing Agreement

– File Lawsuit

• Litigation is costly• IP can be found to be invalid

– Alternative Dispute Resolution (ADR)


• Civil Court System:

– Federal Courts

• Copyrights• Trademarks• Patents

– State Courts

• Trade Secrets• Trademarks


• Alternative Dispute Resolution (ADR):

– Arbitration

• Neutral 3rd Party Makes Binding Ruling• Adversarial

– Mediation

• Neutral 3rd Party Facilitates Resolution• Non-adversarial

– Benefits

• Speed, Economy, Confidential, Select Venue, Select Rules

Enforcement of Intellectual Property: Criminal

Enforcing IP Through the Criminal System:• U.S. Department of Justice

– Criminal Division: Computer Crime & Intellectual Property Section (CCIPS)

– U.S. Attorney’s Office: Computer Hacking and Intellectual Property Units (CHIPS)

– Federal Bureau of Investigation

• U.S. Immigration & Customs Enforcement (ICE)

• The National Intellectual Property Rights Coordination Center (IPR Center)

– Online IP complaint form at: http://www.ice.gov

Enforcement of Intellectual Property: Criminal

• Criminal Statutes Involving IP:

– Criminal Copyright Infringement (17 USC 506)

– Trademark Counterfeiting Act (18 USC 2320)

– Economic Espionage Act (18 USC 1832)

– Smuggling Goods into the U.S. (18 USC 545)

– Bootlegging Music (18 USC 2318)

– Counterfeit Labeling (18 USC 2318)

Enforcement of Intellectual Property: Criminal vs. Civil

• Majority of IP enforcement actions in U.S. is civil not criminal

• Burden of proof is more difficult in criminal cases

• Higher thresholds for liability in criminal cases

• Criminal remedies can include prison term

• Factors evaluating whether to charge criminally:

– Organized crime involvement

– Public health and safety concerns

– Commercial nature

– Amount of loss and harm

Enforcement of Intellectual Property: Administrative

• Enforcing IP Through the Administrative System:

– U.S. Customs and Border Protection:

• Protects federally registered copyrights and trademarks that are recorded

• Detention, Seizure and Forfeiture of Merchandise

• Right to act on its own (ex officio authority)

– U.S. Patent and Trademark Office:

• Patent reexamination

• Trademark opposition proceedings


• U.S. Customs Recordation Procedure:

– Trademarks are recorded for a term of years to run concurrently with the underlying registration.

– Copyrights are recorded for 20 years, unless the copyright registration expires before that time.

– At any time, owners may provide U.S. Customs with information on suspected infringers:

• Manufacturers, country of origin, entry port, suspected dates, etc.


• Trademark/Copyright Recordation Application

– Available at: http://www.cbp.gov

• Verifying the recordation of your registration with U.S. Customs

– Intellectual Property Rights Search (IPRS)

• https://iprs.cbp.gov/help.asp



Abroad• World Trade Organization

– Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement:

• Sets the minimum standards for IP protection for Member Countries.

• IP laws are established and enforced by each individual Member Country.

• Most countries have analogs to the IP protection/enforcement procedures in the U.S.


Abroad• Office of the U.S. Trade Representative

– “Special 301” Process

• Procedure used to identify countries that deny adequate protection for intellectual property rights.• Countries may be placed on the “Watch List” depending on level of IP protection.• May be subject to sanctions.• Review conducted each year.


Abroad• Seek local support to protect your IP

– Contact the local trade associations for your industry

– Contact local American Chamber of Commerce

– Contact local officials who enforce IP

• Hire a lawyer in the foreign market– Should work jointly with your U.S. lawyer providing local expertise

– Protect and enforce IP based on local law

Strategy Targeting Organized Piracy (STOP!) Initiative

• Most comprehensive initiative ever advanced to combat piracy and counterfeiting.

• Dismantle criminal enterprises that steal IP.

• Help companies establish their rights in the U.S. and abroad.

• Reach out to our trading partners and build an international coalition to block fake goods.

• Maintains a telephone hotline to contact and IPR legal expert:

1-866-999-HALT

Conference on Intellectual Property in the Global Marketplace

Checklist for Protecting and Enforcing your Intellectual

Property Rights in the U.S. and Abroad

Dorian MazurkevichAttorney-Advisor

[email protected]